Did you ever hear the Tragedy of Samsonite Corporation and Make Rich Limited?
This important court decision helps to clarify the position on the protection of parts of products with registered designs and must be considered when devising a design filing strategy in Hong Kong.
In a nutshell, parts of products may be validly protected by Hong Kong registered designs provided those parts are made and sold separately. This means parts that are not sold separately and that do not have an independent life as an article of commerce may not be validly protected.
Key questions to consider when assessing the registrability of a part include:
- Does the part have, or will it have, an independent life as an article of commerce?
- Was the part intended to be sold separately and/or has it been sold separately since the application was filed?
- Is the part manufactured separately from the article of which it forms part?
If the answer to any of the above questions is no, you may have to reconsider your strategy when seeking design protection in Hong Kong.
It’s important to note that a Hong Kong registered design undergoes a formality examination only. Consequently, whilst a design may be registered in Hong Kong without difficulty, its validity may be open to attack by a third-party post registration.
Read on to find out more…
Hong Kong Designs Ordinance
The Hong Kong Designs Ordinance defines “design” (外觀設計) as features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye. The following are not included within this definition:
(a) a method or principle of construction; or
(b) features of shape or configuration of an article which—
(i) are dictated solely by the function which the article has to perform; or
(ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part.
In the above context, an “article” is any article of manufacture and includes any part of an article if that part is made and sold separately (emphasis added).
It is this “made and sold separately” wording that may affect the validity of a Hong Kong registered design for a part of an article.
To understand how to interpret this wording, it’s necessary to turn to the Samsonite decision:
SAMSONITE CORPORATION v. MAKE RICH LTD [2001] HKCFI 397; [2002] 1 HKC 692; HCA 4007/2001 (21 November 2001)
This case related to an application by the claimant for interim protection in the form of an injunction to restrain the defendant from manufacturing and marketing a range of luggage that allegedly infringed the claimant’s rights.
In assessing the application and determining whether there was a serious question to try, the Hong Kong High Court considered the question of infringement of the claimant’s registered design (amongst other rights).
The registered design in question was published under number 9810434.8 and related to a “Wheel system for an upright luggage case.” The representations that were filed are shown below:
The novelty of the design was claimed to lie in the shape and configuration applied to the article as shown in the representations and the features shown in dotted lines were specifically excluded from protection.
Unsurprisingly, the defendant attacked the validity of the registration on the grounds it related to a part of an article that was not made and sold separately.
To assist in reaching a decision, the High Court turned to Russell-Clarke on Industrial Designs, Sixth edition which referenced a similar provision in the old UK Registered Designs Act 1949 (RDA(A)) at paragraph 3.30:-
“Spare parts and parts of articles
The definition of “article” in section 44(1) of the RDA(A) contemplates that an article in respect of which a design is registered can be a part of another article. Thus, such items as handles for wardrobes, or fancy steering wheels for cars, can be the subject of design registrations in their own right (as distinct from merely forming part of the design of the greater article into which they are incorporated), so long as the part concerned is “made and sold separately.” The House of Lords has decided that, in order to satisfy this requirement, it is not sufficient that the part concerned is made and sold separately simply as a spare part for the greater article; it must in addition “have an independent life as an article of commerce and not be merely an adjunct of some larger article of which it forms part.”
Ford Motor Co. Ltd’s Design Appns [[1994]] R.P.C. 545 at 554 lines 20-5, per McCowan L.J., QB Div Ct; approved by Lord Mustill in Ford Motor Co. Ltd’s Design Appns [[1995]] R.P.C. 167 at 179 lines 3-6, HL.”
And at 3.32:-
The House in Ford (supra) cited with apparent approval the observations of Graham J. in Sifam Electrical Instruments Co. Ltd v Sangamo Weston Ltd [1973] RPC 899 at 913, who was considering whether the fronts of electrical meters were registrable under the Registered Designs Act:
“the meter front here is not now and never has been sold separately nor was it ever intended that it should be… If an article or part of an article is in fact being sold at the time of the application to register that in itself would invalidate the registration because the design would have been published and would not be ‘new or original’ within subsection (2). What then do the words mean? The defendants say they mean ‘susceptible of being sold separately’, which they say this meter front is. But here again any part of any article is susceptible of being sold separately even if, for example, the part has to be forcibly removed from the whole of the article of which it forms part… Why should designs not be registrable for such parts which are susceptible of industrial design and of being dealt with as articles of commerce? However to give the words such a meaning would have the result that any part of any article could then be registered and thus would defeat the apparent intention of the Act. One might also then ask:
When is part of an article not an article in its own right?
… The intention must be to grant registration only for such articles as are intended by the proprietor of the design to be put on the market and sold separately, such as for example a hammer handle, or a bit for a bradawl …
The words used as ‘if that part is made and sold separately’, and the phrase as a whole, to my mind, confirms that both the manufacture and sale of the part in question must be operations which are distinct from the manufacture and sale of the whole article of which the ‘part’ forms a component. It is necessary to imply the words ‘to be’ in order to construe the phrase as not including sale of the part prior to or at the date of the application for registration since this would produce an absurd result contrary to section 1(2), and cannot possibly have been the intention of the legislature.””
In consideration of the above, the High Court found that the claimed “wheel system” was not made and sold separately and that the registered design was invalid. In reaching this decision, the High Court noted that the corresponding UK registered design was in respect of the complete article without dotted lines.
So, based on this decision, when assessing whether or not a part is made and sold separately, as mentioned above, we need to consider:
- Does the part have an independent life as an article of commerce or is it merely an adjunct of some larger article of which it forms part?
- Was the part intended to be sold separately and has it been sold separately since the application was filed?
- Is the part manufactured separately from the article of which it forms part?
Thoughts and Conclusions
Protecting standalone parts of articles in Hong Kong should be straightforward. After all, applicants will have a fairly clear idea of their intentions for a part and how it will be sold and, therefore, whether a corresponding registered design would be likely to withstand an invalidity attack.
However, it’s very easy to creep into invalidity territory. The risk is particularly high when instructions are received from overseas where design laws and practices are not so well-aligned with those of Hong Kong. Attorneys are constantly pushing the boundaries of what may be protected, and it’s a common practice to use dotted lines to exclude parts from the scope of protection. As shown in the Samsonite case above, dotted lines should be used in Hong Kong with a great deal of caution. They may potentially expand the scope of protection, but this could well be at the expense of validity.
Questions also arise in relation to designs for more cutting-edge “articles”. Technology is advancing at an ever-increasing pace and many features of design now exist that were never even contemplated when the Hong Kong Designs Ordinance, and the UK law on which it was based, was first drafted.
We now have smartphones and smart watches with graphical user interfaces and fancy icons whose designs are extremely important for brand identity and user experience. However, many questions arise in relation to the protection of such designs in Hong Kong. For example, is a computer icon an article of manufacture and is a design applied to the computer icon by any industrial process? Is a computer icon part of a GUI or smartphone or smart watch? If yes, is that part made and sold separately? One might argue the design is applied to a computer icon by a smartphone or smart watch based on instructions in computer code and that the icon is manufactured by an industrial process. But it would be a stretch to claim it’s sold separately… These are extremely difficult questions to answer and it’s hard to anticipate how the court might judge the validity of registrations for such designs. I’m not aware of any such cases in Hong Kong to date. Based on the Samsonite judgement, though, the court could well find such registrations invalid.
Whilst applicants may be prepared to take the risk and seek registered design protection without regard to potential validity issues, it would be prudent to at least consider also seeking registered protection for the whole article incorporating a particular design, without dotted lines. Although the scope of protection would be narrower, this approach would at least provide a potential fall-back position in the event a broader version was invalidated.
If you have any design questions in relation to Hong Kong or require assistance to protect a design, please do not hesitate to contact us.
